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Technology
Technolog y
Overview
Technology is a fast-paced sector with no shortage of legal complexities. Possessing a wealth of
multidisciplinary experience, Katten's Technology team helps you navigate matters associated with
the development, procurement, implementation, use, monitoring and commercial exploitation of
technology, data and intellectual property.
Comprehensive services on the cutting edge
Whether you are a developer, provider, customer or investor, your business goals are closely aligned with your
technology assets. We pride ourselves on being forward-thinking and providing sophisticated solutions to help make
those goals a reality. You can count on our attorneys to be well-versed in the areas that are important to your
business, including intellectual property protection, development transactions, strategic alliances, distribution issues,
outsourcing, commercial contracts and disputes, transactions related to data and databases, and emerging
technology.
Intellectual property protection
Advises on matters involving employee and inventor agreements and complex confidentiality arrangements that
allow for disclosure but create necessary protective measures
Provides guidance on intellectual property protection strategies
Negotiates patent, trademark and copyright licenses
Counsels on source code and technology escrows
Development and collaboration transactions
Structures a broad range of domestic and cross-border joint venture and partnering arrangements and other
strategic alliances, including joint development agreements
Counsels on funding development
Negotiates software development agreements with complex bonus and penalty provisions
Coordinates original equipment manufacturer (OEM) agreements
Distribution issues
Represents technology providers in the licensing and distribution of proprietary technology and intellectual
property
Counsels on marketing matters, including minimum advertised pricing (MAP) policies
Negotiates reseller and referral arrangements
Coordinates 3PL and other logistics agreements
Outsourcing, commercial contracts and disputes
Navigates virtually every type of contractual arrangement for customers and for providers, including the
outsourcing of technology services and business functions, procurement transactions involving hardware, large-
scale software licenses, data and technology services, and the use of cloud-based solutions
Creates sets of form documents such as end-user licenses, support and maintenance agreements and service-
level agreements — and negotiates with sophisticated end users on complex, one-off arrangements
Engages in prelitigation efforts and settlements to resolve commercial disputes
Emerging technology
Provides counsel on legal matters with respect to development of and content for digital media and websites, as
well as the benefits and risks associated with social media
Manages compliance with ever-changing privacy legislation — including increased standards for mobile apps —
and how to take advantage of big data trends
Our Experience
Representation of technology users
Represent leading provider of direct investing services in the legal aspects of its online operations. Includes
procuring software, professional services and support with leading providers of software solutions for the financial
services industry; advising on inbound and outbound software licensing; advising on regulatory issues; drafting
online customer agreements; and advising on Internet law issues.
Represent website for culinary enthusiasts in all legal aspects of the development, content population and
operation of a website featuring tutorials from celebrity chefs, culinary-related features articles, a recipe database,
marketing and sale of cookware and other culinary tools and culinary educational information.
Represent consortium of stock exchanges and a regulatory authority in drafting and negotiating contracts for
administrative and processor services relating to the collection and consolidated reporting of market data.
Represent insurance company in a major license and consulting agreement for the development, integration and
implementation of a new claims management system.
Represent large municipal health care system in negotiating and implementing a license and services agreement
to replace its existing medical records system with an integrated system linking numerous health care facilities
and other health care providers.
Represent nationwide for-profit hospital system in technology procurement transactions. Includes licensing an
electronic medical records system, enterprise-wide scheduling system, cloud-based human resources system and
enterprise resource planning system.
Represent retail chain of jewelry stores in outsourcing the chain's IT infrastructure.
Represent boutique hotel management group in various transactions related to critical technology. Includes
central reservation system and hotel management software, as well as an agreement for the development of
websites pertaining to each hotel.
Represent large banking institution regarding a contract for a product by which the bank streams FX rate quotes
and allows customers to submit order requests for FX transactions.
Representation of technology developers and vendors
Represent publicly traded gaming company in a platform development transaction for a new generation of casino
games.
Represent social media management company in preparing form contracts, negotiating customer contracts and
counseling on data use issues.
Counsel startup mobile app developer in all aspects of its business, including development contracts, licensing
and privacy issues.
Outside general counsel to a software developer that provides identification verification and multi-factor
authentication services in connection with preparing form documents and end-user licensing negotiations,
including transactions with major national and international banks.
Represent developer of banking solutions in customer licensing transactions with large nationwide banks.
Counsel publicly traded technology solutions and outsourcing provider in a customer dispute over outsourcing
services.
Represent Latin American market infrastructure firm in negotiations with a service provider regarding electronic
trading and market surveillance systems and services powering a new foreign stock exchange.
Represent a leading nationwide provider of financing solutions for middle-market, private equity-backed
transactions in establishing a new information technology infrastructure. Includes IT network infrastructure,
hosting arrangements, outsourced help desk and numerous long-term software licensing and development
contracts.
Represent privately held global leader in cloud computing solutions and strategic IT services for a joint venture
with a major engineering and design firm to create and market products for the public sector.
Represent national provider of secure clinical communications to hospitals, health systems and physician
providers in contract negotiations with its major customers.
Represent European provider of payroll services in agreement to resell payroll-related software offered by a North
American entity.
Key Contacts
Tanya L. Curtis Partner
Chicago
+1.312.902.5593
Leonard A. Ferber Partner
Chicago
+1.312.902.5679
Recognitions
BTI Litigation Outlook
o IP Litigation Honor Roll, 2018
Chambers USA
o Intellectual Property
o Illinois, 2006–2020
IAM Patent 1000
o Patent Litigation, 2017
The Legal 500 United States
o Trademarks
o Litigation, 2016–2020
Managing Intellectual Property Annual Awards
o Trademark Contentious
o Midwest Region, 2017
Managing Intellectual Property IP Stars
o Patent Contentious
o United States, 2017
o Trademark Contentious
o United States, 2017
o Trademark Prosecution
o United States, 2017
U.S. News Best Lawyers – "Best Law Firms"
o Litigation – Intellectual Property
o National, 2012–2020
o Chicago, 2012–2020
o Litigation – Patent
o National, 2014–2018
o Chicago, 2012–2018
World Trademark Review 1000
o The World's Leading Trademark Professionals
o National, 2017–2018
o Chicago, 2017–2018
o New York, 2017–2018
o Washington, DC, 2017–2018
